LIBRPiRY OF CONGRESS 



019 918 043 5 



■ 



Suggestions 



to 



Foreign = Applicants 



for 



Registration of Trade=Marks 



in the 



UNITED STATES PATENT OFFICE. 



Published By 

B. SINGER 

Security Building. Chicas:o, 30 Church Street, New York 
Victor Building, Washington Neuenburger Strasse 17, Berlin 



£CIA293536 



CONTENTS. 

Three Federal Trade-Mark Laws <j 

Who May Apply <i-7 

The Application 7 

Name, Domicile, Location and Citizenship 7-"J 

Classification of Merchandise 'J 

Particular Description of Ooods 9-11 

How Lonf? Used 11-12 

Affixed or Applied to the Goods 12 

Description of the Mark 12-13 

Dravvintr 13-14 

Specimens 14-16 

Declaration 16-17 

Kepresentative 18 

International Convention and Ke<»istration in Foreign 

Country 18-19 

Foreijrner Havino; Manufacturing: Establishment in tiie 

United States 19 

What May be Registered 19-24 

Ten-Year Proviso 24-25 

]"*ublication, Opposition, Interference and CjUKM^llation 26-27 

Appeals 27 

Duration of Certificate, Fees and Notice of Ixepistration 27-28 

Recording Trade-Marks with Collectors of Customs 28-30 

Advantages of Registration 30 

Classes of Merchandise 31 

Forms of Ai)plication 32-40 



SUGGESXIOrsIS 

TO 

FOREIIGISI ARRLI CANTS 

FOR 

REGISTRATION OF TRADE! MARKS 

IN THE 

United States Patent Office 



FORMS FOR MAKING APPLICATION FOR REGISTRA- 
TION BY FOREIGN APPLICANTS AND THE UNITED 
STATES PATENT OFFICE CLASSIFICATION OF 
MERCHANDISE. 



BY 

WILLIAM L. SY.MONS, 

LL. M., Columbian rnivorsity, 

M. P. L., George W'ashinjjfton rnivcrsily. 

Member of the Bar of the District of Columbia, 

Assistant Kxaminer, United States Patent Clliee, 

Lecturer on Trade Mark and Patent Law, Washington College of Law. 



I'rin.isiiKi) liv 

B. SINGKU, rATi:NT Attohnky. 

Chicago, Berlin, New York and Washington. 






Copyright, mil, by William L. JSyn 






PUBLISHEKS^ NOTICE. 

The information contained in this pamphlet appears to me so valu- 
able to foreign applicants for registration of trade-marks in the United 
States that I purchased all copyright privileges of the writer. There has 
existed for several years the necessity for a consideration of the practice 
which has grown up under the comprehensive Trade-Mark Act of Feb- 
ruary 20, 1905. I believe the explanation of that practice here presented 
and the suggestions made will prove so helpful that I have decided to 
place a copy of this pamphlet in the hands of every trade-mark lawyer 
in all foreign countries. 

Chicago, July, 1911. 

B. Singer, 
Chicago, Berlin, Xow York and Washington. 



PREFACE. 

The suggestions made in this pamphlet were written for the purpose of 
assisting the owners of trade-marks who "reside in or are located in foreign 
countries" and their attorneys in securing registration of trade-marks in 
the United States Patent Office under the Act of February 20, 1905. The 
fundamental principles of the law of trade-marks have not been considered, 
for what constitutes a valid, technical trade-mark has been discussed in 
many treatises and in a great many decisions ; no discussion of the reasons 
which may have influenced Congress in passing a declaratory rather than 
an attributive law has been attempted. An effort has been made, how- 
ever, even at the risk of being censured for repetitions, to explain exactly 
the form in which application for registration should be made ; the various 
steps which should be taken to secure the certificate of registration; what 
kind of mark is registrable under the provisions of Section 5, and the 
most important decisions interpreting the act. As an appendix to this 
pamphlet, there have been printed forms to illustrate the manner of pre- 
paring applications, and the official classification of merchandise. It is 
believed that if applicants will follow closely the forms presented and be 
directed by the suggestions made, many amendments and extensive cor- 
respondence resulting in great expense and delay will be avoided. 

The next to the last proviso of Section 5 is referred to throughout as 
the "ten year proviso.^^ The title. Commissioner of Patents, refers to 
any Commissioner who has decided any of the points considered. 

The abbreviation O.G. refers to the Official Gazette of the Unitrd States 
l*atent Office wliich is puhlislicd weekly. 

Offiicial Cazette citations have been given in most instances, even wlieii 
the decisions were rendered by a court and not by the Patent OlVioo. 

The United States Patent Office ])iil)lish('s, for free dMrib-o i,.n. tl,.. 
complete Federal trade-mark laws and reguhilions. 



'|'iiim:k rKDKi: \l tijadk-makk laws. 

I iif lirsi iM'dcral TratK-Mark Law, thu At-l of .Inly «, 1870, was de- 
claivd uiU'oiistitutiniiaL /'. N. v. Stcffcns, 100 U. S., 8'^; the second, the 
Act of March 15, ISSL had many defect^*, amontj which was tlie failure to 
provide for the rc«;ist ration of marks used in interstate commerce, and the 
third law is tlir Ad of Fehruary '^0, 1905, wliich is now in ft)rce. This 
is a dechiratory h»w as distini;uished from an attrihutive .law such as 
exists in many forei*^n countries. With us registration is declaratory of a 
right to a mark; in many other ct)untries, for instance, in Germany, the 
trade-mark law makes registration attrihutive of the right. Lnder the 
invalid Act of 18TU, in force from 18T0 to 1879, less than 8,000 marks 
were registered in the United States Patent OHice; under the Act of 1881, 
in force 24 years, 30,000 marks were registered, while under the present 
act, which has now heen in force ahout six years, 38,000 have been regis- 
tered. The advantages of registration are becoming more apparent as the 
courts consider the provision of the act. Some amendments have been 
recommended by the United States Patent Office, and the Patent Bar, 
and the adoption of these will correct minor defects in the law. 

WHO MAY APPUY. 

The statute specifies that the "owner" of a trade-mark may obtain 
registration. The application must not be made by a general agent, a 
manager, a licensee or any one except the owner. It is only necessary to 
refer to Section 2 of the act to emphasize this point. This section pro- 
vides that, in order to create any right in favor of the party tiling the 
application, it must be accom})anied by a declaration to the effect that 
the applicant, or a member of a firm, or an officer of a corporation or an 
association, believes himself or the firm, corporation or association, in 
whose behalf he makes the application, to be the owner of the mark, and 
that no one else has the right to use such trade-mark. The statute does 
not appear to contemplate the registration of a mark to joint owners; 
registration can be obtained only by an individual, a firm, a corporation, 
or an association. The United States Patent Office has consistently re- 
fused to register to joint applicants. 

If there is any doubt as to the ownership of a mark this should be 
cleared up before the application is filed. To do otherwise is to run the 
risk of losing the advantage of an early filing date, and probably con- 
siderable useless expense will be incurred and the government fee will 
he lost, as money will not be repaid unless it is paid by actual mistake. 



In one case the Patent Office held that after an application had been 
filed in the name of a company, substitute papers showing that the name 
of the company had been changed and that this latter company was the 
owner of the mark, should not be entered. Ex parte Certain Cure Co., 
147 O.G., 772. 

In addition to an owner of a trade-mark who is domiciled in the United 
States, application for registration may be made by an owner who resides 
in a foreign country which by treaty or law affords similar privileges to 
citizens of the United States. By similar privilege is not meant the 
privilege of registration under a law of the scope and character of ours, 
but a country which permits citizens of the United States to register in 
that country. It has been held that if an applicant is located in a for- 
eign country other than that of which he is a citizen, his application will 
be governed by the law of the country of location rather than that of 
citizenship. Ex parte Ilaggenmacher, GO O.G., 438. 

THE APPLICATION. 

A complete application consists of a petition, a statement, a declaration, 
a drawing, and five specimens of the trade-mark. This application must 
be in writing; must be addressed to the Commissioner of Patents, and 
must be filed in the Patent Office. Complete forms showing the manner 
of preparing an application for an individual, a finn, corporation or asso- 
ciation are shown on page .... et seq. An applicant may prosecute his 
own application, but the Office advises an applicant, unless he is familiar 
with such matters, to employ a competent attorney. An attorney must file 
a separate power to act in each application; a general power is not suffit ii'ut 
and will not be accepted. 

The power of attorney, and the appointment of a representative a> it- 
quired by Section 3 of the act, may be included in the petition. All ai)pli- 
cation papers except the drawing must be signed by the applicant and not 
by the att(;rnoy of record; the drawing may be signed by tlie attorney. 
'J'he rules recjuirc that the a])pli(ation must lie niaile in the l'ji'::lish 
language. 

NAMK, DOMICILK, LOCATION AND (iriZLNSll 1 T. 

The a|)|)licant's name, domicile, Kxation and riti/ciisbip are rixpiiivd 
to be given. Tlic Commissioner of Patents lias ruled tliat the name of the 
a|)pli(ant must be uniform throughout the papers. E.r jnirir Ihtston Foun- 
Idin Prti Co., 1 Kl (). (J., '?.'»;!!. ^I'lu' failure to give applicant's eorreet nanu' 



wiierevcr it appears in an apj)li(ati()n pioljably causes as many formal ob- 
jections to a])}>litations to be made by tbe Patent Ollice as any otber tlefect. 
If tlie applicant is an individual, and the form suggested is followed, it is 
necessary that the name of the applicant a])pear in only five places; — 
namely, the signature to the petition, statement, and declaration, in the 
preamble to the statement, and in the body of the declaration. If the 
applicant is a firm, corporation or association, the name of the applicant 
need not n])piar in the declaration. After the application is prepared, it 
Would save much time and expense if it were compared to see that the name 
is absolutely uniform. It is not sufficient that the name appears one place 
as Co., and another place as Company ; or as J^td., in one part of the appli- 
cation, and as Limited in another; as Soc. and Society. It must appear 
throughout as Company or Co. ; not both Co. and Company, etc. If the 
article "The" is a part of the name of a corporation applicant, it should 
always be used. The draftsman will often enter the name of the appli- 
cant on the drawing according to his idea of what it should be. He should, 
however, be guided by the name as signed to the statement. 

Honorable titles are regarded as forming no part of an applicant's name, 
and should be omitted. The title, Dr., which is used in many declarations 
filed by applicants located in Germany, should be omitted. In re Charles, 
Piince de Loewenstein, 108 0. G., 562. 

The statute specifies that both the "domicile" and "location" shall be 
given. The forms prepared by the Patent Office suggest that an individual 
specify his residence and his place of doing business; a firm, their domicile 
and place of doing business, and a corporation or association, its location 
and place of doing business. What is important to notice is that it is not 
sufficient to give the place of doing business only; the residence, domicile 
or location, as the case may be, must also be specified. The place of doing 
business, and the residence, domicile or location will often be the same, 
but this fact does not avoid the necessity of particularly mentioning both. 
The residence, domicile or location may be given generally, while the place 
of doing business should be definitely stated. For instance, an individual 
may state that he resides at Vienna, Austria, but should state that his 
place of business is a certain street and number in said city when such 
is the case. 

An individual should specify of what nation he is a citizen, or of what 
ruler he is a subject. The citizenship of a firm sufficiently appears if the 
domicile is specified, although the forms indicate that the names of the 
individuals composing a firm sliould be given, and their citizenship speci- 

8 



ficd. There appears to be no good reason why the names of the persons 
composing the firm, and their citizenship, should not be given. To do 
this will avoid the request almost sure to be made, that they be specified. 
If, however, a firm does not desire to specify the names of the persons 
composing it and their citizenship, it may refuse upon good authority. 
Smith V. Reynolds & Jacobs, 3 0. G., 214. 

CLASSIFICATION OF MERCHANDISE. 

By Section 2 of the Act of May 4, 1906, amending the Trade Mark Act, 
the Commissioner of Patents was required to establish classes of mer- 
chandise for the purpose of trade-mark registration. All goods are now 
classified in 49 classes, as shown by the official classification appearing on 
page 

The numbers of the classes run from 1 to 50, inclusive, except that 
there is no class 18, this class having been abolished after fifty classes had 
been established. The titles of the class should appear in the application 
exactly as stated in this official classification ; no change whatever should 
be made. To make any changes will result in the requirement for an 
amendment as soon as the change is noted by the Examiner of Trade Marks 
or his assistants. If any change escapes their notice, and the application is 
passed to issue, the case will be withdrawn from the issue and the change 
be required to be made if the error is discovered by the proof readers. No 
contest has ever resulted over the question whether the classification 
adopted is fair to all concerned. The number of classes is less than the 
number adopted by the International Bureau at Berne, the French and 
some other foreign Patent Offices. Classes 13, 39 and 46 are very broad 
and general. These oft(*n enable a manufacturer or producer of such lines 
of goods to include all the goods or produce handled by liim. 

PARTICULAR DESCRIPTION OF GOODS. 

Section 2 of the Act of May 1, 1906, in addition to autliorizing tlie Coni- 
missioner of Patents to es<al)lish classes of goods, provides further tliat : 

*^0n a single application for registration of a trade-mark tlie trade-mark 
may be registerecl at the option of tlie aj)plicant for any or all goods upon 
which the mark lias actually been used comprised in a single class of nu'r- 
chandise, provided the ])artic\ilar descriptions of gootls he stated." 

This requirement that tlie particular description of goods must be stated 
gives rise to considciahle diniculty. 'Hie oOice has consistently interpreted 
this provision of tlic law lo mean tlial an applicant must spei'ify definitely 

9 



niul uiHHjuivocally the i^oods upon which tlic miiik lia.s been used. Witli 
two or three cxtcptions, for whicli there are ecrtain reasons, whicli will be 
referred to, all broad or general terms are i)rolubited. The Examiner has 
been sustained in his objection to the word "including," the abbreviation, 
"etc.," and the use of equiv<ual words. Ex purtr Kinpire Knife Co., 145 
(). (i., :()3; Ex parte Newton, IGO 0. G., 1037. 

The desire of the applicant is to use a broad term on the supposition 
that tlie use of such a term in his certificate is as advantageous as a broad 
claim ill a ))ai('Ut. This virw, liowever, appears to be erroneous. The right 
to a tiadc-UKirk depends upon use, and as this use must be in connection 
with some particular goods, apparently no injury results from declaring 
what those goods are. Courts must protect from the use of an infringing 
mark upon similar merchandise, and the use of a general term in a certifi- 
cate for the goods upon whicli the mark has been used will not avoid dis- 
closing what particular use has been made of the mark. 

If, however, an applicant, in filing his application, is not sure he has 
covered all the goods upon which he has used his mark, he should us( 
some general term in order to avoid the office objections of "new nuitter" 
when he 'seeks to amend the particular description of goods, to include 
every item of goods upon which the mark has been used. An applicani 
may wish to file an application before he can determine by investigation 
all the particular goods which he is entitled to enumerate, and in order 
to preserve all his rights under that application he should be sure so to 
designate his goods that every kind belonging to a single class may be 
set forth by amendment in the prosecution of the case. This precaution 
should not be overlooked. 

It is often dilficult to decide in what class certain goods are classified. 
There is no published ofticial classification list, and an examination of 
the registered certificates will show that the office has often changed goods 
from one class to another. The decisions upon the question of the classi- 
fication of some artFcles must in the end be arbitrary. Some goods partake 
of the nature of goods in two or more classes, l^'or instance, a wood polish 
is also generally in the nature of an oil or a varnish, but is classified in 
class 4. Some metal cooking utensils are receptacles, but all metal cooking 
vessels are classified in class 13. The classification determined by the 
Examiner of Trade ^Farks should be accpiiesced in unless some substantial 
right is impaired liy such a classification. The Commissioner has ruled 
that th(^ Examiner of Trade ^laiks is an cxjtcMt in >ucli matters; that lie 
is pciuliarly fitted to determine in what class an item of goods should 

10 



be placed, and that his action will not be disturljed except on a clear show- 
ing of abuse of discretion. Ex parte Nestle and Anglo-Swiss Condensed 
Milk Company, 129 0. G., 3160. 

There are a few "general'^ terms of particular description permitted by 
the Patent Office. The term "enameled metal ware," which is classified in 
class 13, has always been held to be a sufficient compliance with the re- 
quirement that the particular description of goods be given, probably for 
the reason that the list of articles manufactured by the metal enameling 
manufacturers is very large, and to name each article would involve an 
unnecessary hardship. It is also the practice to admit the term ''canned 
fruits and vegetables;'' it is not necessary to specify the kind of either. 
"Jewelry for personal wear" is a term which may be used by an applicant 
for registration of a trade mark on those many articles of jewelry, such 
as brooches, finger rings, earrings, watch chains and similar goods. The 
terms gold and silver flat-ware, tables-are and hollow-ware are also 
accepted. 

An examination of the classes established will show that there are sonif 
classes which for lack of a better name may be designated "^Material" 
classes, such as classes 1, 4, 12, 30 and 42 ; others which may be called 
"Construction" classes, such as classes 2, 3, 8, 26 and 39; some of the 
classes may be called "General," and others may be designated "Special" 
classes. Classes 2, 14, 17 and 33 are "General," while classes 8, 22 and 34 
are "Special." A general rule in cases of doubt is to place goods in a 
"Construction" i-ather than in a "Material" class and in a ^'Special" rather 
than in a "General." 

In enumerating tlie goods u})oii whicli a mark ]ia< been used, a foreign 
applicant should keep in mind the ruling in tlie case of Dawson, Ilalliwell 
and Co., 12-1 0. G., 628, to llie effect that only goods specified in the for- 
eign certificate can be claimed in thi,- country. If the foreign country in 
which the applicant is located permits the use of general terms In describ- 
ing the goods upon which the applicant has used his mark, then any 
goods may be claimed which fairly fall within the description of gmuls 
recited in the foreii^n certificate, if contained in a sinule class of mer- 
chandise as establi^lied by tlie l*atcnt Ollicc. 

HOW LONG USKIX 

If llie maik lias been reeiMitIv adopled it is Itest to give the «lay of the 
monib, 01- at least the month, and year wljen use was first Ix'gun. If ihc 
date when u-;- of the niMik was tirst begun is not given in the a[)plieation 

11 



as originally ftlcd, it will be necessary to file a new deelaration with the 
amendment specifying the date of use, or, if an earlier date of use is claimed 
than was originally claimed, a new declaration is likewise required. If the 
application is under the ten year proviso and use was begun in 1895 it is 
necessary to be specified as to tlie date in order to assure the office that 
use was begun prior to February 20th of that year. 

The forms of application approved by the Commissioner indicate that the 
applicant's predecessors should be given, but it is not necessary to do this. 
If the applicant's predecessor is a registrant, however, it would appear 
best to give the name of the predecessor to prevent the registered mark 
from being cited against his application. 

AFFIXED OR APPLIED TO THE GOODS. 

How the mark is applied or affixed to the goods is usually described in 
the last paragraph of the statenf^nt. All the different methods of using 
the mark may be enumerated, but one of the ways specified must be the 
manner of use ^hown by the specimens. In other words, the allegation 
of use must correspond with the proof. No reference should be made to 
the use of the mark on letter heads, circulars or advertising matter. The 
act particularly specifies that a trade-mark may be deemed to be affixed 
to the article when it is placed in any manner in or upon the article itself 
or the package or receptacle or upon the envelope or other thing in, by 
or with which the goods are packed, inclosed or prepared for sale. (Sec- 
tion 29.) In the case of Hay v. Todd Mfg. Co. v. Querns Bros., 86 0. G., 
1323, the Commissioner ruled that a mark was affixed or attached to the 
goods if it was so associated with the goods as to distinguish them by the 
particular mark used. 

DESCRIPTION OF THE MARK. 

The act as now amended by the Act of February 18, 1909, provides that 
^*a description of the mark itself shall be included, if desired by the appli- 
cant or required by the Commissioner, provided such description is of a 
character to meet the approval of the Commissioner.'' 

It is the practice of the office since this amendment was passed to re- 
quire a description of the mark if it contains what appears to be a fac- 
simile signature, or if there is any doubt as to the character of the mark. 
Of course, an applicant may describe his mark if he desires, this descrip- 
tion meeting the approval in the first instance of the Examiner of Trade 
Marks and the Commissioner on appeal, if the applicant and the Examiner 

12 



cannot agree. The office will now insist that if any of the mark is de- 
scribed all shall be described. This, however, does not apply if the de- 
scription is merely the identification of a picture, a statement in regard to 
a fac-simile signature, or an explanation of a conventional lining to show 
color. This description should follow the words "accompanying drawing'' 
in the §rst paragraph of the statement. It is the practice to require a de- 
scription of color if the drawing is lined for color according to the con- 
ventional lining given in the Patent Rules. If the drawing is lined, the 
color must be described. Ex parte M. Zimmerman Co., 127 0. G., 1991. 
If it is not desired to claim color, the drawing should not show the con- 
ventional lining. Colar may be claimed without linmg the drawing to 
show color. For instance, if the mark is a red star, the following may 
appear after the words "accompanying drawing," "consisting of a star 
printed in red.'^ If the mark is a portrait of a living individual or con- 
sists in part of such a portrait, the written consent of such individual 
to the use and registration of his portrait as a trade-mark must be filed, 
and the portrait should be described after the words "accompanying draw- 
ing'' as follows: "consisting of the portrait of," or "the portrait being that 
of (here give name)." If the individual is deceased the description 
should be "the portrait being that of (here give name), deceased." If the 
picture is fanciful, the description should be: "tlio picture being fanciful." 

DRAWING. 

The kind of drawing tliat must be furnished is clearly indicated by 
Rule 36 of the Rules for tlie Registration of Trade "Nfarks. It sliould be 
made on white bristol board of sufliciont thickness to prevent it from 
bending or breaking easily; the size must be 10 by 15 inches; one inch 
from the edges must be a marginal line; all work and signatures must be 
within this line, not even a letter of the signature of the applicant or his 
attorney must be outside of this line; a blank space not less than one and 
one-fourth inches, measuring downwardly from tlu' top mai-ginal line, 
must be left for a heading; India ink must ht' usiul and all lines must be 
clear, sharp and solid, and made with the j)(Mi only ; pale or rough lines will 
usually cause a drawing to be rejected. The mime of the owner of the 
trade-mark signed by himself or his attorney must be placed at the lower 
right hand corner, and it is here again insisted that the name of the appli- 
cant as signed to the drawing is liu' only one of the original papers which 
may be signed by the attorney of nH«»i(l. W itiusses to the signature of u 
drawing are not required. 

18 



The mark shown in the drawing; must agree exactly with the specimen 
or with tilt' mark ^hown in tlu* copy of the foreign (-(Ttilicate. K.r parte 
fhnjt llros. ik Co., \->\ {). (i., \r>2:i. 

If a (lrawin«; is lined to show tiie mark in color the conventional lining 
given o]){)o8ite page 88 of the Patent Rules must be followed. 

Section IC of the Trade-Mark Act provides that registration iinilcr this 
act shall be prima facie evidence of ownership, and the Court of Appeals 
of the District of Columbia held, in the case of Johnson v. Brandean, 131) 
(). G., 73*2, that a registrant has a prima facie right to everything which 
appears upon the drawing. Section 5 prohibits the registration of anything 
but arbitrary mattPr except under the ten year proviso. Now, the prac- 
tical difficulty is that many foreign countries permit the registration of 
the whole label, and the certified copy of the foreign certificate often shows 
matter registered that is not arbitrary. In the case of Ex parte Pietro, 
It?? 0. G., 2394, the Commissioner held that the only mark which a for- 
eign applicant is entitled to register in this country is the mark which he 
has registered in the country in which he is located. This ruling was, 
however, modified by the decision in the case of Ex parte Soc. '** Prod. " 
Chim. ''■'' Farmac. ^* A. Bertelli, d'C, 144 0. G., 817, so that now a foreign 
applicant must show in his drawing all the arbitrary features of the mark 
as registered abroad and must omit or disclaim all that are not arbitrary. 
This, of course, refers to the registration of a technical mark and not 
to an application for registration under the ten year proviso. What are 
and what are not arbitrary features must be determined by the provisions 
of Section 5 and the ruling in many cases interpreting that section. 

SPECIMENS. 

Under the authority of the statute to require specimens, the Commis- 
sioner has by rule 2*3 required the filing of five specimens of the trade- 
mark as actually used upon the goods or the same number of fac-similes, 
when from the mode of applying or affixing the mark to the goods speci- 
mens cannot be funiished. A great deal of trouble would be saved appli- 
cants and the ofHce if applicants would keep in mind that the statute spe- 
cifically states that specimens "as actually issued'' must be present^id. 
Mutilated or cut out specimens will always be objected to and should not 
be filed. Proof copies of labtls nre probably never used on merchandise, 
and should not be filed as specimens. It is not to be expected the office 
will })ass such alleged labels. ]f a stencil is used, impressions from the 
stencil on plain pieces of paper will be accepted as satisfactory. Perhaps 

14 



the most satisfactory fac-similes, which, according to the rule, are accepted 
when it is not practicable to furnish specimens, are photographs of all or a 
part of the article with the trade-mark plainly appearing thereon. This is 
a good way to show the use of a mark cast into a machine. 

The Food and Drugs Act of June 30, 1906, and the Meat Inspection 
Law of June 30, 1906, have caused some modification of the rule in regard 
to specimens, although the rules have not been formally changed as to the 
number of specimens required. It is now the practice to require one or 
more labels showing the use of the mark on each article of food, and each 
medicine specified in the particular description of goods. This does not 
mean that if there is one medicine, or one food, specified that one label 
will be sufficient, but that if there are several items of goods one specimen 
only for each is required. The reason for this is as follows: 

In the cases of The Schuster Co. v. Mueller, 126 0. G., 2192; The Peter 
Schoenhofen Brewing Co. v. The Maltine Co., 134 0. G., 1805; Levy & Co. 
V. Urh 135 0. G., 1363, and Ex parte Barclay and Barclay, 135 0. G., 217, 
it was definitely determined that a mark used in connection with mis- 
leading or deceptive matter is not registrable; that no right could be 
given under the trade-mark law to an applicant who engaged in de- 
ceiving the public. It, therefore, followed that to determine whether a 
mark has been properly used labels for all tlie goods must be furnished 
for examination. Labels which contain matter prohibited by the Regula- 
tions for the enforcement of the Food and Drugs Act approved by the 
Secretary of the Treasury, the Secretary of Agriculture, and the Secre- 
tary of Commerce and Labor, and the Food Inspection Decisions of the 
Department of Agriculture are held to be misbranded, and new labels are 
required. The notices of Judgment of the Department of Agriculture are 
carefully examined, and if a specimen contains statements which are 
contrary to tlie rules to be deduced from those rulings of the United 
States Courts, such specimens are rejected and new labels must be fur- 
nished free from the objectionable matter. If a specimen contains any de- 
ceptive matter, it is the practice to refuse registration, in view of the pro- 
vision of Section 21 of the Trade Mark Act, which is to the elTect that no 
suit shall be maintained under the provisions of this act when the trade- 
mark has been used in unlawful business or with the design of deceiving 
the public. If any statement on the specimens is false in any particular, 
it is held to be in violation of Section 8 of the Fiuxl and Drugs Act, which 
the Commissioner of Patents in the case of AV junlc lUircUiy and Barclay. 
supra, said it \sas the duty of the Tati'ut OlVuc to lu'lp to fufiU'ic. Tlie 



practice (liscus*;ed is believed to ho sound, not only in view of the laws 
and regulations ivft-nvd to, hul because of the strong statements of the 
Supreme Court of thr Initcd States upon the question of fraud in the 
cases of Manhattan Mcilicini Co. v. Wood, 108 U. S., 218; Clinton E. 
Warden & Co. v. California F'nj Syrup Co., 187 U. S., 516, and many 
other decisions of that tribunal. 

That an applicant for re^i.-t ration of a trade-mark should not fur- 
nish specimens showing the use of his mark which contain false, deceptive, 
or misleading statement's seems very important. If an examination of the 
registered iile shows that an applicant filed new labels upon the objection of 
the Examiner of Trade Marks that the labels filed contained false or mis- 
leading statements, an infringer will have this important piece of evidence; 
this implied, if not direct admission, that the applicant at the date he 
asked to have his trade-mark registered was engaged in deceiving the 
public. It is now the practice of the Patent Olfice, as above stated, to 
permit an applicant to cancel the specimens containing false statements; 
but suppose a ruling should require the practice to be changed so that 
no trade-mark could be predicated upon labels which contain false or de- 
ceptive statements. If this were held, it would seem that it must neces- 
sarily follow that a new application for registration would have to be filed, 
giving a date of use beginning with the date when proper labels were 
adopted and used. 

Great importance, therefore, attaches to labels free from valid objection. 

DECLARATION. 

The regular form of declaration should be filed; no changes or varia- 
tions should be attempted. If tlie regular form is not followed the appli- 
cant should be careful that the requirements of Section 2 of the act and 
Rules 31, 32, 33 and 34 are all complied with. It should be kept in mind 
that this declaration must be made by the applicant, if the applicant is an 
individual, by a member of the firm, if a firm is the applicant, or by an 
ofiicer of a corporation or an association if such a body is the owner of the 
mark. If a corporation or an association is the applicant, the statute is not 
satisfied if the declaration is made by a clerk or manager or some similar 
employee. The declaration should be signed by an individual who is 
recognized as an officer by the charter, or the law under whicli the body 
was organized. 

The provision of Section '2 wliieh relates particularly to foreign appli- 
cants is as follows: 

16 



"If the applicant resides or is located in a foreign country, the statement 
required shall, in addition to the foregoing, set forth that the trade-mark 
has been registered by the applicant, or that an application for the regis- 
tration thereof has been filed by him in the foreign country in which he 
resides or is located, and shall give the date of such registration, or the 
application therefor, as the case may be, except that in the application in 
such cases it shall not be necessary to state that the mark has been used in 
commerce with the United States or among the states thereof. The veri- 
fication required by this section may be made before any person within the 
United States authorized by law to administer oaths, or, when the appli- 
cant resides in a foreign country, before any minister, charge d'affaires, 
consul, or commercial agent holding commission under the Government 
of the United States, or before any notary public, judge, or magistrate 
having an official seal and authorized to administer oaths in the foreign 
country in which tlie applicant may be whose authority shall be proved 
by a certificate of a diplomatic or consular officer of the United States." 

It is first to be noted that the word "statement" as here used is not 
synonymous with the word "statement'^ as used by the Patent Office to dis- 
tinguish that part of the application which gives the name, location, domi- 
cile, citizenship, etc., of the applicant. As here used it means the declara- 
tion. Ex parte Konigliches, Ilofhmuamt, Munclien, 146 0. G., 720. 

It is to be noted that if the mark has been registered in the foreign 
country in which the applicant resides or is located, the fact of registration 
and the date thereof should be set forth, and it is the established practice 
to give the number of the foreign certificate of registration. If the mark 
has not been registered, the fact that application for registration has been 
made should be stated with the date of the application. If the mark 
has been registered, no reference need be made to the (bite of application for 
registration. Care should be given not to give (he date of application as 
the date of registration, or vice versa. In tlie casc^ of h\v parte Felien & 
GuiUeaitme-Lahmeyenrcrkc Acficn-iieselhclmfl. l.")0 (). (J., ,')()}>. a new dec- 
laration was required, tbc applicant having >laliMl in its declaration that 
the mark had been re«;istere(l on a ceriain date, which was. in fait, the date 
on which a|)|)licMt ion foi- resist i*al ion had been lih-il. 

The act clearly sets foi'th hefoi'c whom the \ ei-ilieat ion may he made. 
and re(piires the antlioiity of the |)erson Ix'fore whom made to W proved 
by the cei-tilicate n^ ji diplDniat ie or i-onsular (dlicer of (lie Tniti'd States 
in case it is n(»t made before sui h (»llicer. 



REPRESENTATIVE. 

Section 3 providi'S for the designation in writing of sonic person residing 
in the United States upon wlioni notice of i)roceedings affecting the right 
to the trade-mark may be served. Service upon tliis representative is made 
by the act as efTective as service upon the registrant. It is important for 
a registrant to notify tlie Commissioner of Patents if any change is made 
in tlie representative or his address, for leaving a copy of a valid notice at 
the last address of the representative of which the Commissioner of Pat- 
ents has been notified is sufTicient to serve notice upon the Registrant. The 
appointment is usually made as a part of the petition, although this may 
be done by a separate instrument. A general power of attorney to act is 
not a sufficient compliance with the requirements of Section 3 ; there must 
be a statement that a certain person is appointed to accept notice of pro- 
ceedings or upon whom process may be served as required by this section 
of the Trade Mark Act. In the case of Ex parte Wertheimcr & Cie, 132 
0. G., 679, it was ruled by the Commissioner that the power to appoint 
a representative may not be delegated to an attorney; that the appoint- 
ment must be made ])y the applicant for registration. 

INTERNATIONAL CONVENTION AND REGISTRATION IN 
FOREIGN COUNTRY. 

On ^larch 29, 1887, the United States became a party to the Interna- 
tional Convention for the Protection of Industrial Property concluded at 
Paris March 20, 1883. In order to carry out the provisions of Article IV 
of this Convention Congress provided by Section 4 of the Trade Mark Act 
that if an application is filed in this country within four months from the 
date on which it was first filed in a foreign country, which by treaty, con- 
vention or law affords similar privileges to citizens of the United States, 
it shall be accorded the same force and effect as if filed in this country 
on the same date on which it was filed in the foreign country. 

This Section 4 of the Trade Mark Act contains the important recpiirc- 
ment that a certificato shall not be issued until a foreign applicant has 
actually secured registration in the country in which he is located. The 
evidence of the fact of registration in the foreign country which has always 
been accepted is the certified copy of the foreign certificate. Ex parte 
Beckett, 119 0. G., 340, and the copy must be certified by the proper for- 
eign goveniment official. A f^^py of the foreign certificate sworn to before 
a United States Consul or other official will not be accepted. 

18 



This certified copy of tlie foreign certificate must be presented if appli- 
cation is made for the registration of a mark under the ten year proviso, 
as well as if the application is for the registration of a technical trade- 
mark, Ex 'parte Actien-Gesellschaft fur AnUine-Fahrikaiion, 129 0. G., 
2857. 

FOREIGNER HAVING MANUFACTURING ESTABLISHMENT IN 
THE UNITED STATES. 

By Section 3 of the Amendatory Act of May 4, 1906, it is provided that 
if the owner of a trade-mark has a manufacturing establishment within 
the United States, he shall be accorded, so far as the registration and pro- 
tection of trade-marks used on the products of such establishment are 
concerned, the same rights and privileges which are given to owners of 
trade-marks domiciled within the United States. A special form of appli- 
cation is required for registration of a mark which is used upon articles 
produced by a foreigner in a manufacturing establishment located in this 
country. It is not necessary to have the mark registered in the country in 
which the applicant is located, but the applicant must swear that the 
goods for which the trade-mark is claimed are produced in an establish- 
ment located in the United States. 

WHAT MAY BE REGISTERED. 

Section o specifies that no mark by which the goods of tlie owner of tiic 
mark may be distinguished from other goods of the same class shall be 
refused registration as a trade-mark on account of the nature of such 
mark unless the mark is of a certain specified character. 

The first exception is that a mark which comprises ininioral or scandal- 
ous matter, the flag, coat of arms, or other public insignia of the United 
States, any state, municipality or foreign country or the emblem of any 
fraternal society is not registrable even under the ten year proviso. (/« re 
Calm, Belt & Co., 122 0. G., 354.) 

On the ground of public policy it has been ruled that neither tiie name 
nor picture of a deceased President of the United States is rogistrablo 
{Ex parte Ihinuer Cifjnr Mf;/. Co., 13S (). (I., .")-.»S). T!ie names and 
pictures of deceased rulers of other eonntrie- ;iie. ho\\r\er, rejjistrabli' 
under th(» })resent ])ractiee. 

Marks which are identical with a registi'n'd or known mark owned and 
in use by aiiotlier ami appropriated to goods of tlie .-ame deseriptive pro[»- 

19 



ertios, or which so nearly rosonihlo a registered or known mark, and appro- 
priated to niorcliandise of the same descriptive properties as to be likely 
to cause confusion or mistake in the mind of tlie public shall not be 
registered. 

Some of the Iradini,' decisions of the Court of Aj)poals of the District of 
Columbia on the question of what constitutes such similarity as to cause 
confusion are Wayne County Preserving Company v. The Burt Olney Can- 
ning Company, 140 0. G., 1003 ; In re Indian Portland Cement Company, 
134 O. G., 518; Peter Schoenliofen Brewing Company v. llie Maltine 
Company, 134 0. G., 1805, and In re S. C. Ilcrhst Importing Company, 
134 0. G., 15G5. In the Wayne Co. case the court said that doubts on the 
question of similarity between the mark of an applicant and a registrant 
must be resolved in favor of the registrant. 

What constitutes goods of the "same descriptive properties" is an im- 
portant question which has not been satisfactorily settled. Further de- 
cisions of the Court of Appeals of the District of Columbia and other 
courts on this question must be awaited. In the case of Walter Baker & 
Company, Limited, v. Harrison, 138 0. G., 770, in holding that the Com- 
missioner of Patents erred in sustaining a demurrer to an opposition to 
registration of a mark for coffee by the owner of a similar mark used on 
cocoa the Court of Appeals of the District of Columbia laid down this 
general rule: 

"Things may be said to possess the same descriptive properties when 
they can be applied to the same general use. Coffee and cocoa, when used 
as beverages, are at once associated as belonging to the class of beverages 
in general domestic use. They belong to the class of beverages universally 
used on the table and sold in prepared packages for that purpose. Should 
the same mark be granted to different persons for use on coffee and cocoa, 
respectively, the natural and certain result would be, that the one wishing 
to profit by the use of the same mark would adopt tlie style of package 
used by the other, and, by such unauthorized imitation, cause confusion 
in the mind of the purchasing consuming public as to the quality of the 
goods so marked. The intent of the statute is to protect the rightful 
owners of trade-marks in their valuable property rights, and it seems to 
tax the courts to the utmost to protect those rights against the ingenuity 
of counsel and the designs of sharp competitors. A mark should be de- 
nied, not only when used upon goods of the same descriptive properties 
as a similar registered mark, but when used on goods belonging to the 
same general class." 

In the case of Phoenix Paint k Varnish Co. v. John T. Lewis & Bros. 
Co., l.'^>n (). (I.. 000. wherr tlie question was wliether ready mixed paints 

20 



and paste paints are goods of the same descriptive properties^ this same 
court held that they are^ and said: 

"We think two" trade-marks may be said to be appropriated to merchan- 
dise of the same descriptive properties in the sense meant by the statute 
when the general and essential characteristics of the goods are the same. 
To rule that the goods must be identical would defeat the purpose of the 
statute and destroy the value of trade-marks. The test is whether there 
is such a sameness in the distinguishing characteristics of the goods as to 
be likely to mislead the general public. If there is, only one mark should 
be registered. Congress evidently intended to prevent the second registra- 
tion of a mark that would enable an unscrupulous dealer to obtain the 
benefit of a valuable trade reputation established by conscientious effort 
and fair dealing to the injury of the public as well as the owner of the 
mark." 

The present Commissioner recently overruled the holding of a former 
Commissioner, and held that whisky and gin are goods of the same de- 
scriptive properties. (P. J, Boiulin Liquor Co. v. J. & J. Eager Co., 148 
0. G., 571.) 

Some other decisions on the question of what constitutes goods of the 
same descriptive properties are: Florence Mfg. Co. v. J. C. Dowd & Co., 
178 Fed., 73; Ex parte The Ohio Garment Company, 1.53 0. G., 821; 
American Tobacco Co. v. Polacseic, 170 Fed., 117; Ex parte Bindley Hard- 
ware Company, 141 0. G., 285; Amencan Stove Co. v. Detroit Stove Works 
and Barstow Stove Co., 134 0. G., 2245, and Church & Dwight Co. v. Russ 
et al., 99 Fed., 276; 91 0. G., 228. 

A mark which consists merely in the name of an individual, firm, cor- 
poration or association is not registrable unless written, printed, impressed 
or woven in some particular or distinctive manner or in asso<'iation with 
the portrait of the individual, provided, however, that a trade-mark other- 
wise registrable shall not bo refused registration beiause of its IxMng the 
name of an applicant or a ))ortion thereof. This last proviso, whicli became 
a law February 18, 1911, wjus ])asse(l to enable a firm, corporation or asso- 
ciation to register its name if it is an arbitrary mark. The decisions in the 
cases oi Kent urly Dislillrrirs ^ Warrhouse Co. v. Oh! Lexinginn Club Dis- 
tilling Co., 13.5 (). (J., '220, and In re Success Co.. 152 O. G., 958, made 
it impossible for a firm, corporation or association to R»j^ister all or a sub- 
stantial pait of its linn, eorpoiate or association name which it nsotl as ti 
trade-mark if not disl iiictivelv (lis])laye(l, althoii.i;h any individual or other 
firm, corporation oi- association could n'giRter such mark if it wa.'^ not 
substantially its name. The Success Co. could not register tlie word 

«1 



'•Smci'ss,"' ;iltln>u^^li aiiv iiidis idujil, or olht-r liiiii, (.orpoiation or associa- 
tion lilt' naiiR' of wliii-h did not iniludc the word "Success" as a substan- 
tial part of its name could register this word. Now an arbitrary mark is 
registrable notwithstanding it i> ihc name or part of the name of the 
applicant. 

A fac-siniilc signature is held to be a distinctive display of a surname, 
anil registrable. {Kx parte Mark Cross Co., 102 0. G., 622.) 

Writing a surname in scri})t ty})e with a paraph beneath it has been 
repeatedly held not to be a particular or distinctive manner of display. 
In Ex parte 'lite Amulet Chemical Coinpauy, HG 0. G., 719, the Com- 
missioner said that the distinctiveness must be in the name itself; that it 
was not sufficient to print the name in connection with heraldic devices or 
other arbitrary matter. What constitutes a distinctive display of a sur- 
name is further considered in the cases of Ex parte Englehard & Sons Co., 
109 0. G., 1886; Ex parte Pittsburgh Valve Foundry and Construction 
Co., 128 0. G., 887; Ex parte C. II. Alden, 131 0. G., 2419; Ex parte F. 
Mayer Boot & Shoe Co., l.")l (). 0., 1014; Ex parte Polar Knitting Mills, 
154 0. G., 251, and In re Artesian Manufacturing Company, 166 0. G., 
988. 

A word merely descriptive of the goods with which it is used, or of a 
characteristic or quality of such g(X)ds, is not registrable; neither is a word 
which is merely a misspelling of a descriptive word. It should be noted 
that it is not necessary for a word to be directly descriptive in order to 
come within the prohibition of the statute. The word "Self- Trading" as 
applied to cartridges was held both by the Commissioner of Patents and 
the Court of Appeals of the District of Columbia as descriptive, indicating 
that the cartridges were to be used in a certain type of gun, that is, in a 
gun commonly known as a "'self-loading gun.'' Winchester Repeating 
Arms Co. v. Peters Cartridge Co., 30 App. D. C 505; 134 0. G., 2030. 

It was urged in the case of In re Anti-Cori-Zine Chemical Company, 151 
(). (J., 452, that the wM)rds ''Get Well" as applied to a medicine were regis- 
trable, as they described no (puility of the medicine; that it was absurd to 
say that a medicine could "get well," and that if the words as used indicated 
anything they merely indicated an effect to be produced by the medicine. 
The court, however, said that these words were a direct claim that the 
nu'dicine had the i>roperty of causing the person who took it to recover 
from disease; to ^'get well,'' and were not registrable. 

22 



In the case of In re Central Consumers' Compaitij, 140 0. G., 1211, the 
court laid down what is regarded by some lawyers as a strict rule for de- 
termining whether a mark is descriptive; the rule is: 

"It was evidently the intention of Congress in placing the?e restrictions 
in the trade-mark act to prohibit any one from acquiring a property-right, 
protected by law in its exclusive use, in a name possessing any inherent 
signification! that would, of itself, enhance the sale or value of the article 
or articles to which it may be applied. In other words, it was intended 
to limit the selection to mere arbitrary words or designs, the value of 
which should consist alone in their becoming fixed in the public mind 
through continued use on the goods of the owner. It was not intended 
that the mark should lend value to the goods, but that the quality of the 
goods and the reputation of the owner should ultimately make the mark 
valuable as a symbol in the connection in which it may be used." 

The statute prohibits the registration of "merely a geographical name or 
term." That such a mark is not a valid trade-mark was held by the United 
States Supreme Court in the cases of Canal Co. v. CIarl\ 80 U. S., 311, 
and Columbia Mill Co. v. Alcorn, 150 U. S., 460. 

The main difficulty relative to thi? provision is to determine whether 
a word which is a geographical term and which also has some other well 
known meaning is primarily geographical, or is arbitrary. The fanciful 
meaning of such words as Aurora, Delta, Defiance and Selma has been 
held to predominate in the cases of Ex parte Little & Co., 85 0. G., V2'2\ : 
Ex parte Manogue-Pidgeon Iron Co., 97 0. G., 2084; Ex parte Bi/rou 
Weston Co., 99 0. G., 861, and Ex parte Huenfeld. 98 0. G., 1968. re- 
spectively, and these words have been registered as technical trade-marks. 
Oriental, Manhattan^ Tabasco, Cadillac, Union, Columbia and the outline 
map of the United States have been held not valid trade-marks in the 
cases of In re Hopkins, 128 0. G., 890; Ex parte The Davis Sewing Mo- 
chine Co., 112 0. G., 1752; Mcllhcnnt/s Son v. The New Iberia Extract 
of Tabasco Pepper Co., Ltd., 153 0. G., 547; Ex parte Wolverine Mfg. Co., 
152 0. G., 487; United States Tobacco Co. v. McCrcenery, 144 F., 531 : 
Cohimhia Mill Co. v. Alcorn, supra, and Ex parte American Sugar Refin- 
ing Co., 144 0. G., 562, respectively. The rules given in the oases above 
cited bearing on the question of geographical names nuist bo considered if 
the question is close* to determine whether the jiarticular word falls on the 
geographicnl or tlie arbitrary si(1(> of the line. It may, however, be jsafo 
to say that as a geiieial iiile if a won] has a well known giM>graplneal nionn- 
ing its arbitrary mi'aning must bi' clearly e>tal»lislied by tlie applieanl. 
Ex parte American Saw Co., 58 O. G., 521. 

23 



A portrait is it'!;i>tral>lr with the writtoii (.'on.-enl of tlic person whose 
portrait is usoil as a trade-mark, and, even if the entire mark is not de- 
scrihed in the statement, it is neeessarv to state whose picture constitutes 
a part of the mark. Thi- is now .ilwa\s reipiired. An accepted descrip- 
tion following tile wonls **aecompan\ ing drawing" in the first paragraph 
of the statement is "the portrait shown heing that of (here give name)'' 
and if the person whost» portrait is ustnl is deceased, follow the name by 
the word "deceased." If the picture is fanciful, the words "the picture 
heing fanciful" should follow the words "accompanying drawing." The 
tiotn lie plume or fancy name of an individual is refused registration un- 
less the consent of the individual is filed. 

TEN'-YEAR PROVISO. 

The next to the last proviso of Section 5 is commonly referred to as "the 
ten-year proviso." In re Calm, Belt & Co., supra. This proviso enables 
the user of a mark not a technical trade-mark, who has had sole and ex- 
clusive use for ten years next preceding February 20, 1905, to register 
his mark. (See act as amended Feb. 18, 1911.) It was at first held 
by the Commissioner of Patents that "actual and exclusive use" was 
established if the applicant had the right to exclude others from the 
use of the mark during the ten-year period, but the Court of Appeals 
in the case of Worcester Brewing Co. v. Renter, 133 0. G., 1190, de- 
cided that the use during that period must have been sole and exclu- 
sive; that even if the rankest infringer used the mark any time dur- 
ing the ten-year period, the right of the applicant to register under this 
clause was destroyed. No mark should probably be registered under the 
ten-year proviso if it is registrable as a technical mark, although it is 
fair to say that there is some difTerence of opinion on this question. Regis- 
tration of a non-technical mark under this proviso is of great advantage 
to the registrant. In the case of American Lead Pencil Co. v. Gottlieb, 
189 Federal, 178, the Circuit Court of the United States for the Second 
Circuit sustained a bill for infringement of a descriptive mark which had 
been registered under the ten-year proviso on the ground that such regis- 
tration was prima facie proof that the mark had acquired a secondary 
meaning. Xothing better can be done than to (juote from the opinion in 
that case: 

"The only question therefore which remains is the character of the com- 
plainant's mark. As 1 have already said, it certainly denotes excellence, 
and is prima facie invalid on that aeeount. l)Ut it is also elear that it might 

24 



easily under well-known principles, obtain a secondary meaning. If by 
long association it has come in the minds of the public to indicate the com- 
plainant's manufacture, even though it originally was only a kind of puff 
to the wares, that is enough. There can i)o no need of going over the 
cases from Reddaway v. Banham, L. K. A. C (1896), 199, which have 
made this doctrine now familiar, i. e., that although words are originally 
descriptive, the public frequently does get to associate them with the manu- 
facture of a given man so that they obtain what is known as a secondary 
meaning. Were there proof in this case that the word 'Beats-All' had 
obtained that secondary meaning, the complainant's case would be com- 
plete. I think that proof is priraa facie supplied by the registration of 
the mark and that that was the intention of Congress. The mark itself 
purports to be given under the last proviso of Section 5 of the statute (Act 
Feb. 20, 1905, C. 592, 33 Stat, 726 (U. S. Comp. St. Supp., 1909, p. 
12-78) ), which is as follows: 

'^ 'N'othing herein shall prevent registration of any mark used by the 
applicant or his predecessor, or by those from whom title to the mark is 
derived, in the commerce with foreign nations or among the several states 
or the Indian tribes which was in actual and exclusive use as a trade-mark, 
of the applicant or his predecessor from whom he derived title, for ten 
years next preceding the passage of this act.' 

"Registration is made only prima facie proof under the statute in any 
case, and it would have been consistent with its general import for Con- 
gress to establish what should be prima facie ])roof of secondary meaning. 
I think by this section it intended to provide a period of time during whicli 
if an applicant himself made exclusive use of even a descriptive phrase as 
a trade-mark, it should be assumed to have acquired a secondary meaning. 
Any other person could, of course, meet that presumption by proof that it 
had in fact never acquired any such secondary meaning; until he does, the 
mark is good under the act. In the earlier proviso of the same section 
Congress had forbidden the registration of any descriptive or geographical 
names, or names indicating character or quality, and the subsequent pro- 
viso I have quoted could only have nu'ant to exclude from the operation 
of that prohibition such descriptive phrases as had l)een exclusively appro- 
priated for more than 10 years prior to the act. The nuist reas4)nable in- 
ference is that, in analogy with the law as tluMi settled, that period of ex- 
clusive use was to create a presumption of secondary meaning. Indeed it 
was a fair ])resumption in fact to suppose thai such marks would have 
accjuired a secondary meaning, if the a|)|)ruam had used tlu-ni exclusivelv 
for so long. It is true that Congress might well have made such a per-o«l 
of 10 yeais always constitute prima facie proof ^A >ccon»l;iiy meaning 
wheneviT the period began, instead of limiting it to a \ise prior to .\pril 
1, 1895, hut it is no ground for niisai)])rehen(ling their purpose that they 
might have nwide it more general. Knglish-speaking people UvimI for 
s(!veral centuries under a prescriptive statute that dated every adverse u.<er 
from the reign of Richard I, and that was a goo«l j)reeedent for Congnss 
to limit the e\ciu>i\e u>er ..f such inark> from a lixetl date that gets 



proii 



ressivelv I-elllote." 



86 



IM I'.lJCA'rioX. orPosiTIoX, IXTKRFFJIFAT'K AXD CAXCEL- 

l.ATION. 

liy Section G it is jjioviik'tl tliut if after exuiuinatioii uf an applieatiun it 
appears that the applicant is entitled to have his mark registered, it shall 
be published at least once in the Otlicial Gazette of the Patent Office. The 
date the applicant alleges he first began the use of his mark is now pub- 
lislicd. Any one wlio believes he would be damaged by the registration 
of a mark may within 30 days after the publication thereof oppose the 
same, by tiling a notice in the Patent Office, stating his grounds therefor. 
The statute s|K'cifies who shall file the notice of opposition and in what 
manner it shall be verified. The opposition proceeding is conducted be- 
fore the Examiner of interferences, and the pleadings and practice follow 
as closely as may be the pleadings and practice in Equity Causes in Fed- 
eral Courts. At the expiration of 30 days, if no notice of opposition has 
been filed, the Commissioner shall issue a certificate of registration. If no 
amendment is required, and if there is no delay for any cause, a cer- 
tificate will usually issue between three and four months from the date of 
filing. The time, however, varies with the condition of the work in the 
Office. 

An interference is declared wlienever application is made for registra- 
tion of a trade-mark substantially identical with a trade-mark used upon 
goods of the same descriptive properties for which a certificate has been 
issued or for registration of which another has previously made applica- 
tion or which so nearly resembles such trade-mark or a known trade-mark 
as to be liable to be mistaken therefor by the public. The practice in in- 
terference proceedings follows as nearly as is practicable the practice in 
patent cases. It is customary to advise an applicant of similar marks 
which have been registered for goods of the same descriptive properties 
when an application is first examined and to refuse registration on these 
references even if the date of use alleged is prior to the date of registra- 
tion. Upon request, however, an interference will be declared between an 
applicant and registrants if the date of use alleged antedates the date of 
registration, without regard to the date of use alleged by the registrants. 
Ex parte Ino. Medicine Co., 101 0. G., 887. 

An application for cancellation of a registered trade-mark may at any 
time be made to the Commissioner of Patents by any one who believes him- 
self injured by the registration. The right of cancellation is considered 
in the first instance by the Examiner of Interferences to whom the law 

26 



says the Commissioner shall refer the application. A certificate is can- 
celed if it appear after a proper hearing that the registrant was not en- 
titled to the use of the mark at the date application for registration thereof 
was filed; that its use has been abandoned by the registrant, or that the 
certificate was obtained by fraud. 

APPEALS. 

From an adverse decision of the Examiner of Trade-Marks an appeal 
lies to the Commissioner of Patents. There does not appear to be any 
limit of time within which an appeal may be filed. Appeals from a de- 
cision of the Commissioner of Patents must be noted to the Court of Ap- 
peals of the District of Columbia within forty days from the date the de- 
cision of the Commissioner was rendered. A petition will lie to the Com- 
missioner from an action of the Examiner of Trade-Marks upon any 
proper question which does not involve the merits of the trade-mark 
claimed, the refusal of registration or a requirement for division. Xo fee 
is required for filing a petition. 

DURATION OF CERTIFICATE, FEES, AND NOTICE OF REGIS- 
TRATION. 

A certificate of registration remains in force 20 years, except that in the 
case of trade-marks previously registered in a foreign country it shall 
cease to be in force on the day on which it ceases to be protected in the 
foreign country. However, in no case shall it continue to be in force more 
than 20 years unless renewed. A certificate may be renewed for the same 
period for which originally registered, an application having been made 
not more than six months prior to the date of expiration of the certificate 
issued or renewed. 

The' government fee which must be paid u])()n filing an a]ij)lieation or 
the renewal of an application is ten dollars; the fee for filing a notice of 
opposition is ten dollars and the fee on an appeal from the decision of 
the Examiner of Interferences or the Examiner of Trade-Marks is fifteen 
dollars. No fee is required in filing an application for eaneellatii^n. 

It is nuide the duty of ji registrant to give notice t»> the j)ul)lie of tlie 
fact of registration in one of the following forms, "lu'L^i.-tt'ieil in l". S. 
Patent Ofiice," or "Reg. U. S. Pat. Off." 

This legend must be affixed to tiie goods if the nature of tlie mark or 
the goods will peiinil ; if not allixed to the goods, it must be plaeod upon a 
label or on llie |i:ul\age oi- i-eeepl;u'l(> iiielosiiig the gtuvds. The dlsud- 

87 



vantage ropulting from not anixiiiL' llu- prrscribed notice is that iis a suit 
for iiifrin^fint'iit no dainai^cs mav !»♦• ncovered except \i\nm proof that 
tlic (Irfciulaiit was (hilv uotifictl of iiifiin«:('inent and (ontinued tlw same 
after notice. 

HKCOHDIMi TKADE-MAHKS W iTll CULLECTORS OF (LSToMS. 

Xo small advantage is obtained after registration of a mark has been 
seeiired by complying with the j)rovisions of Section 27 of tlie act. The 
Treasury Department has issued the following order for the enforcement 
of said section : 

Trade-marks. 
Treasury Department, September 1 , 1909. 
To collectors of customs and others concerned: 

The attention of officers of the customs and others is invited, to the 
following provisions of Section 2T of the Act, approved February 20, 1905, 
effective April 1, 1905: 

Sec. 27. Tliat no article of iini)orted merchandise which sliall copy or simulate 
tlie name of any domestic manufacture, or manufacturer or trader, or of any manu- 
facturer or trader located in any foreign country which, by treatjv, convention, or law 
alFord-s similar privileges to citi/ens of the I'nited States, or which shall copy or 
simulate a trade-mark registered in accordance with the provisions of this Act, or 
shall bear a name or mark calculated to induce the public to believe that the article 
is manufactured in the I nited States, or that it is manufactured in any foreign coun- 
try or locality other than the country or locality in which it is in fact manufactured, 
shall be admitted to entry at any eustoin-liouse of the United States; and, in order 
to aid the oflicers of the customs in enforcing this proliibition, any domestic manu- 
facturer or trader, and any foreign manufacturer or trader, who is entitled under the 
provisions of a treaty, convention, declaration, or agreement between the I'nited 
States and any foreign country to the advantages afTorded by law to citizens of the 
United States in respect to trade-marks and commercial names, may retjuire his 
name and residence, and the name of the locality in which his goods are manufac- 
tured, and a copy of the certificate of registration of his trade-mark, issued in accord- 
ance with the provisions of this Act, to be recorded in books which sliall be kept 
for this purpose in the Department of the Treasury, under such regulations as the 
Secretary of the Treasury shall prescribe, and may furnish to the Department fac- 
similes of his name, the name of the locality in which his goods are manirfactured. 
or of his registered trade-mark; and thereupon the Secretary of the Treasury shall 
cause one or more copies of the same to be transmitted to each collector or other 
proper otiicer of customs. 

The provisions of this section give to manufacturers and traders located 
in foreign countries, which, by treaty stipulations, give similar privileges 
to the United States, the same advantages as are given to domestic manu- 
facturers and traders. The act does not affect names or trade-marks here- 
tofore recorded in the Treasun- Department, and as to them the protec- 
tion granted so far as concerns prohibition of importation will continue. 
Nor does the act apjX'ar to make it compulsory on the part of domestic 
manufacturers or traders, or foreign manufacturers or traders, to register 
name< (not trade-marks) with the Commissioner of l^atents, in order to 
prevent illegal imj)ortations. 

28 



Domestic manufacturers and traders and foreign manufacturers and 
traders, to avail themselves of the privileges of the act, so far as concerns 
trade-marks, are required to register their trade-marks with the Com- 
missioner of Patents before the Treasury Department can act. 

Applications for recording the names and trade-marks in this Depart- 
ment under Section 27 will state the name of the owner, his residence, and 
the locality in which his goods are manufactured, and in the case of trade- 
marks should be accompanied with a certified copy of the certificate of 
registration of his trade-mark issued in accordance with the provisions of 
the act and the names of the ports to which facsimiles should be sent. 
In the case of the name of a domestic manufacture, manufacturer, or 
trader (not registered as a trade-mark in the Patent Office), the applica- 
tion must be accompanied by the proper proof of ownership and proof as 
to the country or locality in which his goods are manufactured, which 
must consist of the affidavit of the owner or one of the owners, certified 
by an officer entitled to administer oaths and having a seal. 

On the receipt by a customs officer of any such facsimiles, with infor- 
mation from the Department that they have been recorded therein, he 
will properly record and file them and will exercise care to prevent the 
entry at the custom-house of any article of foreign manufacture copying 
or simulating such mark. 

No fees are charged for recording trade-marks in the Treasury Depart- 
ment and custom-houses. 

A sufficient number of facsimiles should be forwarded to enable the De- 
partment to send one copy to each port named in the application, with 
ten additional copies for the files of the Department. 

Especial attention is invited to the provision in said section prohibiting 
the entry of articles "which shall bear a name or mark calculated to induce 
the public to believe that the article is manufactured in the United States, 
or that it is manufactured in any foreign country or locality other than 
the country or locality in which it is in fact manufactured," and collectors 
and other officers of the customs are instructed to use due diligence to pre- 
vent violations of this provision. 

The provisions of the act also apply to Porto Rico, tlie Philippine 
Islands, Hawaii, and any other territory under the jurisdiction and control 
of the United States. 

Attention is also invited to the f()]l(nving provisions of Section o of the 
act approved May 4, 1906, effective July 1, lOOn: 

Sec. 3. That any owner of a trademark who shall have a niaiiufaoturinj^f o^ 
tablishment within the territory of tlio United Sta<«>s shall bo accorded, so far as 
the registration and protection of trademarks used on the products of such m- 
tablishment are concerned, the same rights and ])rivileges that are accorded to 
owners of trade-marks domiciled within the territory of tlie United States by the 
Act entitled ''An Act to authorize the registration of trade marks used in \\m\- 
merce with foreign nations or among the several Slates or with Indian trilH\s, and 
to protect the same," approved February twentieth, nineteen hundred ami five. 

'J'his DepartnuMit has ruled that affidavits aeeonipanying applications 
for recording (lie names of foreign manufactures, nianiifaeturers. or 



tra(l«M's (not registered as trade-marks in tlic Patent Otlice) may bo ccr- 
tifuMl hv American consular officers. 

James R. Hkynolds, Acting Secretary. 

Al)\A\'rA(ilvS OF RElJlSTliATloN. 

In addition to the advantages which have already been leferred to, it 
may be noted that by the provisions of Section IG of the Trade-Mark Act 
registration is made prima facu evidence of ownership. This is no small 
advantage. A registrant may present his certificate in a Tnited States 
Circuit Court and unless this prima facie proof of ownership is overcome 
he will be entitled to judgment. If suit is brought upon a registered 
mark, judgment may be entered for any sum not exceeding three times 
the amount of the damages which the complainant has sustained, with 
costs, in addition to the profits to be accounted for by the defendant. If 
the complainant secures an injunction, the Court may order .ill labels, 
signs, prints, etc., to be delivered up to be destroyed. An injunction 
granted by any Circuit Court of the United States may be served on the 
parties against whom it was granted anywhere in the United States where 
found. 

In the recent case of The Amrrican Lead Pencil Co. v. Gotllii^h, 181 
Fed., 178, the Court held that the complainant's mark was descriptive r«nd 
that the bill would have been dismissed if the mark claimed had not been 
registered under the ten-year proviso of the Trade-^Iark Act. Registra- 
tion of the plaintiffs' descriptive mark under the provision of the Trade- 
Mark Act was held prima facie proof that the mark had acquired a sec- 
ondary meaning. Registration constitutes a public record of the regis- 
trant's claim of his right to the exclusive use of a certain mark. 



30 



CLASSIFICATION OF MERCHANDISE UNDER THE ACT OF 

MAY 4, 1906. 

1. Raw or partly prepared materials. 

2. Receptacles. 

3. Baggage, horse equipments, portfolios, and pocketbooks. 

4. Abrasive, detergent, and polishing materials. 

5. Adhesives. 

6. Chemicals, medicines, and pharmaceutical preparations. 

7. Cordage. 

8. Smokers' articles, not including tobacco products. 

9. Explosives, firearms, equipments and projectiles. 
10. Fertilizers. 

XL Inks and inking materials, 

12. Construction materials. 

13. Hardware and plumbing and steam fitting supplies. 

14. Metals and metal castings and forgings. 

15. Oils and greases. 

16. Paints and painters' materials. 

17. ^Tobacco products. 

19. Vehicles, not including engines. 

20. Linoleum and oiled cloth. 

21. Electrical apparatus, machines and supplies. 

22. Games, toys and sporting goods. 

23. Cutlery, machinery, and tools and parts thereof. 

24. Laundry appliances and machines. 

25. Locks and safes. 

26. Measuring and scientific appliances. 

27. Ilorological instruments. 

28. Jewelry and precious-metal ware. 

29. Brooms, brushes and dusters, 

30. Crockery, earthenware and porcelain. 

31. Filters and refrigerators. 

32. Furniture and upholstery. 

33. Glassware. 

34. Heating, lighting and voiitihititig apparatus, not including electrical npparnhn 

35. Belting, hose, machinery packing, and non-metallic tires. 

36. Musical instruments and supplies, 

37. Paper and stationery. 

38. Prints and publications, 

39. Clothing, 

40. Fancy goods, furnishings and notions. 

41. Canes, parasols and umbreUas. 

42. Knitted, netted and textile fabrics. 

43. Thread and yarn. 

44. Dentiil, medical and surgical a|)pliances, 

45. Beverages, non-alcoholic, 

4({, Foods and ingredients of foods, 

47. Wines. 

48. Malt exhacls and ILpiors, 

49. DiHlill.Ml aleoholie liijuors, 

50. Merchandise not otherwise classified. 
Note: Class 18 was abolished February 24, 1909. 



FORMS OF APPLICATIONS FOR APPLICANTS RESIDING OR 
LOCATKI) IX A FOREIGN COUNTRY. 



(1) FORM OF APPLICATION FOR AN INDIVIDUAL. 

Pitition. 
'To the Commissioner of Patents: 

The undersigned presents herewith a drawing and five specimens 

(Or facsimiles) 

of his trade-mark, and requests that the same, together with the accom- 
panying statement and declaration, may be registered in the L'^nited States 
Patent Office in accordance with the law in such cases made and provided. 

The undersigned hereby appoints B. Singer (Registered Attorney No. 
414), of Security Building, Chicago, 111., and Victor Building, Washing- 
ton, D. C, attorney, with full power of substitution and revocation, to 
prosecute this application, to make alterations and amendments therein, 
to receive the certificate of registration when issued, and to transact all 
business in the Patent Office in connection therewith. 

And the undersigned hereby designates and appoints the said B. Singer, 
Security Building, Chicago, Illinois, as the person on whom process or 
notice of proceedings affecting the right of ownership of said trade-mark 
may be served. 

John Doe. 

• (Signature of appHcant.) 

Dated June 15, 1906. 

(Date of execution.) 



Statement. 
To all whom it may concern: 
Be it known that I, Joe Doe, a subject of the King of Pru-^sia. residing 

(Xame of applicant.) (Citizenship of appHcant.) 

at Berlin, Germany, and doing business at A'o street, in said 

(AppHcant's address.) (Business address.) 

city, have adopted and used the trade-mark shown in the accompanying 
drawing for canned fruits and vegetables, in class No. ^6, Foods and in- 

(Particular description of goods.) (Numl)€r and title of 

gredients of foods. 
class — see classification.) 

The trade-mark has Ixrn continuously used in my business (and in 

the business of my predecessor, Richard Roe^) since February 1, 1S99. 

(Name of predecessor, if any.) (Earliest date of use.) 

The trade-mark is applied or atVi.xed to the goods, or to the packages 
containing the same, by placing thereon a printed label on which the 

(Or state other mode or modes of application.) 

trade-marl- is shown. 

John- Doe. 

(Signature of applicant.) 

(First name must be given in full.* 

32 



Declaration. 
United States Consulate, . 

Berlin, Germany. 
John Doe, being duly sworn, deposes and says that he is the applicant 

(Name of affiant.) 

named in the foregoing statement; that he believes the foregoing state- 
ment is true; that he believes himself to be the owner of the trade-mark 
sought to be registered; that no other person, firm, corporation, or asso- 
ciation, to the best of his knowledge and belief, has the right to use said 
trade-mark in the United States, either in the identical form or in any 
such near resemblance thereto as might be calculated to deceive; (that 
said trade-mark has been registered in Germany, on June 1, 1900, No. 

(Name of country.) (Date.) 

Jf9316;^) that the description and drawing presented truly represent the 

(Number of registration.) 

trade-mark sought to be registered; and that the specimens show the trade- 

(Or facsimiles.) 

mark as actually used upon the goods. 

John Doe. 

(Signature of affiant.) 

Subscribed and sworn to before me, a United States consul, this 20th 

(Official title.) (Date of 

day of January, 1906. 

execution.) 

[seal.] Richard Jones, 

United States Consul. 
(Official title.) 

(a) If applicant has no predecessors, omit this clause. 

(b) If the trade-mark has not yet been registered, but an application for regis- 
tration has been filed in the country where applicant resides or is located, this 
clause should be omitted and the following substituted therefor: 

" that an application for registration of said trade-mark wa.s filed bv him on tlie 
20th day of January. 1900, in England;" 

(Date of filing.) (Name of country.) 



33 



(2) FORM OF AlMMJl ATIOX FOU A FIK.M. 

Petition. 
To the Comniissiniirr of Patents: 

The uiuU'rsigiU'd prisciil Ijuicuitli a drawing and five specimens of 

(Or facsimiles.) 
tlu'ir trade-mark, and request that the same, togetlier with the accom- 
panying statement and declaration, may be registered in the United States 
J*atent Othce in accordance with the hiw in .^ueh eases made and provided. 

The undersigned hereby appoint H. Singer (Kegistered Attorney No. 
414), of Security Building, Chicago, 111., and Victor Building, Washing- 
ton, D. C, attorney, with full })ower of substitution and revocation, to 
prosecute tliis applieation, to make alterations and amendments therein, 
to receive the certificate of registration wlien issued, and to transact all 
business in the Patent Ofiice in connection therewith. 

And the undersigned hereby designate and appoint the said B. Singer, 
Security Building, Chicago, Illinois, as the person on whom process or 
notice of proceedings affecting the right of ownership of said trade-mark 
may be served. 

John Doe & Company, 

(Firm name.) 

By Richard Roe, 

(Signature of'^a member of the firm.) 

A Member of the Firm. 
Dated June 15, 1906. 

(Date of execution.) 

Statement. 
To all whom it may concern: 
Be it known that we, John Doe d- Company, a firm domiciled in Vienna, 

(Firm name.) (Domicile.) 

Austria, doing business at No , in said city, and composed 

(Business address.) 

of the following members, John Doe, Richard Roe, and Henry Poe, sub- 

(Names of members of the firm.) (Citizenship of 

jects of the Emperor of Austria, have adopted and used the trade-mark 

members of the firm.) 

shown in the accompanying drawing for surgical bandages, in class No. 

(Particular description of goods.) 
JfJf, Dental, medical, and surgical appliances. 

(Number and title of class — see classitication.) 

The trade-mark has been continuously used in our business (and in 
the business of our predecessors. Doe & Roe) since January 1, 1902. 

(Name of predecessors, if any.) (Earliest date of use.) 

The trade-mark is applied or afiixed to the goods, or to the packages 
containing the same, by placing thereon a prii\ted label on which the 



trade- mark is shown. 
of application. ) 



(Or state other mode or modes 



John Doe Sc Company, 

(Firm name.) 

By Richard Roe, 

(Signature of a member of the firm 

A Member of the Firm. 



34 



Declaration. 
United States Consulate, | 
Vienna, Austria. ] 

John Doe, being duly sworn, deposes and says that he is a member of 

(Name of affiant.) 

the firm, the applicant named in the foregoing statement; that he believes 
the foregoing statement is true ; that he believes said firm to be the owner 
of the trade-mark sought to be registered; that no other person, firm, 
corporation, or association, to the best of his knowledge and belief, has the 
light to use said trade-mark in the United States, either in the identical 
form or in any such near resemblance thereto as might be calculated to 
deceive (that said trade-mark has been registered in Austria, on June 1. 

(Name of country.) (Date.) 

1900, No. JfOSlG^) ; that the description and drawing presented truly rep- 

(Number of registration.) 

resent the trade-mark sought to be registered ; and that the specimens 

(Or facsimiles.) 

show the trade-mark as actually used upon tlie goods. 

John Doe. 

(Signature of affiant.) 

Subscribed and sworn to before me, a United States consul, tlii^ 

(Official title.) 

20th day of January, 1906. 

(Date of execution.) 

[seal.] Richard Joxes, 

United States Consul. 

(Official title.) 
(a) If the trade-mark has not yet been registered, but an application f«>r regis- 
tration has been filed in the country where applicant resides or is located, this 
clause should bo omitted and the following substituted therefor: 

"that an application for registration of said trade-mark was fih*d by him on the 
20th day of January, 1900, in England;" 

(Date of filing.) (Name of country.) 



36 



(3) FORM OF APPLICATION FOR A CORPORATION OR ASSO- 
CIATION. 

Petition. 
To the Couimissioner of Patents: 

The undersigned presents herewith a drawing and five specimens 

(Or faeslmUes.) 

of its trade-mark, and requests that the same, together with the accom- 
panying statement and declaration, may be registered in the United 
States Patent OtHce in accordance with the law in such cases made and 
provided. 

Tlie undersigned hereby appoints B. Singer (Registered Attorney No. 
41-i), of Security Building, Chicago, 111., and Victor Building, Washing- 
ton, D. C, attorney, with full power of substitution and revocation, to 
prosecute this application, to make alterations and amendments therein, 
to receive the certificate of registration when issued, and to transact all 
business in the Patent OlTice in connection therewith. 

And the undersigned hereby designates and appoints the said B. Singer, 
StHJurity Building, Chicago, Illinois, as the person on whom process or 
notice of proceedings affecting the riglit of ownership of said trade-mark 
may be served. Acme Manufacturing Company, 

(Name of applicant.) 

By John Doe, Secretary. 

(Signature of Officer.) (Official title.) 

Dated June 15, 190G. 

(Date of execution.) 

Statement. 
To all whom it may concern: 
Be it known that Acme Manufacturing Company, a corporation^ duly 

(Name of applicant.) 

organized under the laws of Germany, and located in the city of Berlin, 

(State or country under tlie (Location of 

laws of which organized.) 

Germany, and doing business at No street, in the city of 

corporation.) (Business address.) 

Berlin, Germany, has adopted and used the trade-mark shown in the ac- 
companying drawing for arc and incandescent electric lamps and electric 

(Particular description of goods.) 

heaters, in Class No. 21, Electrical apparatus, machines, and supplies. 

(Number and title of class. — See classification.) 

The trade-mark has been continuously used in the business of said 
corporation (and in the business of its predecessors, John Doe Company), 

(Name of predecessors, if any.) 

since January SO, 1898. 

(Give earliest date of use.) 

The trade-mark is applied or afTixcd to the goods, or to the packages 
containing the same, by placing thereon a printed label on which the trade- 

(Or state other mode or modes of application.) 

mark is shown. Acme Manufacturinct Company. 

(Name of applicant.) 

By John Doe, 

(Signature of officer.) 

Secretary. 
(Official title.) 

, 36 



Declar-ation. 
United States Consulate, 
Berlin, Germany. 
John Doe, being duly sworn, deposes and says that he is secretary of the 

(Name of affiant.) 

corporation, the applicant named in the foregoing statement; that he be- 
lieves the foregoing statement is true; that he believes said corporation 
to be the owner of the trade-mark sought to be registered; that no other 
person, firm, corporation, or association, to the best of his knowledge and 
belief, has the right to use said trade-mark in the United States, either in 
the identical form or -in any such near resemblance thereto as might be 
calculated to deceive (that said trade-mark has been registered in Ger- 

(Name 

many, on June 1, 1900, No. 49316^) ; that the description and drawing 

of country.) (Date.) (Number of registration.) 

presented truly represent the trade-mark sought to be registered ; and that 
the specimens show the trade-mark as actually used upon the goods. 

(Or facsimiles.) 

John Doe. 

(Signature of affiant.) 

Subscribed and sworn to before me, a United States consul, this 

(Official title.) 

20th day of January, 1906. 

(Date of'execution.) 

[seal.] Richard Jon'es, 

United States Consul. 

(Official title.) 

(a) If thio applicant be an association, the word "association"' should be substi- 
tuted for the word "corporation." 

(b) If the trade-maik has not yet been registered, but an application for regis- 
tration has been filed in the country where applicant resi<les or is located, this 
clause should be omitted and the following substituted therefor: 

" that an application for registration of said trade-mark was tiled bv him on the 
20th day of January. 1900, in England;" 

(Date of filing.) (Name of country.) 



(4) declai;aii(»n ion ai'imjcants under the jen- 

YEAK EKOVISO." 
I'nilid iStates Consulntc, / ^ 
London, Enylaiid. )" 

llichard Roe, being tluly sworn, ek-posL'S and :?a3b that lie is the ap- 

<,Narne of ui>plli-ui»t j * • 

plicant named in the foregoing statement; that he believes the foregoing 
statement is true; that he believes himself to be the owner of the mark 
sought to be registered ; that no other person, firm, eorporation, or asso- 
ciation, to the best of his knowledge and belief, has the right to use said 
mark in the United States, either in the identical form or in any such 
near resemblance thereto as might be calculated- to deceive ; that said 
mark has been registered in England on June 1, 1900, No. Jfl215; that the 
description and drawing presented truly represent the mark sought to be 
registered; that the specimens show the mark as actually used upon the 

(Or facsimiles.) 

goods; and that the mark has been in actual use as a trade-mark of the 
applicant (and applicant's predecessors from whom title was derived) for 
ten years next preceding February 20, 1905, and that, to the best of his 
knowledge and belief, such use lias been exclusive. Richauu Roe. 

(Signature of affiant.) 

Subscribed and sworn to before me, a Uniled States consul, this 

(Official title.) 

loth day of Fehrmuy, 1906. Ciiakles Masox, 

(Date of" execution.) 

[l. s.] United States Consul. 

(Official title.) 
(a) In case the applicant is a firm, corporation, or association, the declaration 
should be modlflcd accordingly. 

(5) FORM OF APPLICATION' FOR AN INDIVIDUAL UNDER 

SECTION 3 OF THE ACT OF MAY 4, 190G.« 
Petition. 
'To tlie Commissioner of Patents: 

The undersigned presents herewith a drawing and five specimens 

(Or facsimiles) 

of his trade-mark, and requests that the same, together with the accom- 
panying statement and declaration, may be registered in the United States 
Patent Otlice in accordance with the law in such cases made and provided. 

The undersigned hereby ap})oints B. Singer (Registered Attorney No. 
414), of Security Building, Chicago, 111., and Victor Building, Washing- 
ton, D. C, attorney, with full power of substitution and revocation, to 
prosecute this application, to make alterations and amendments therein, 
to receive the certificate of registration when issued, and to transact all 
business in the Patent Office in connection therewith. 

And the undersigned hereby designates and appoints the said B. Singer, 
Security Building, Chicago, Illinois, as the person on whom process or 
notice of proeeedings affecting the right of ownership of said trade-mark 
may be served. John Doe. 

(Signature of applicant.) 

Dated June 15, 1906. 

(Date of execution.) 

38 



statement. 
To all whom it may concern: 
Be it known that 1, Richard Roe, a subject of Hie King of England, 

(Name of applicant.) (Citizenship of applicant.) 

residing at London, England, and doing business at No. 26 Tlireadneedle 

(Applicant's residence.) (Business address.) 

street, in said city, and having a manufacturing establishment at Hartford, 
State of Connecticut, have adopted and used the trade-mark shown in the 
accompanying drawing for the following products of such manufacturing 
establishment, namely, rubher boots and shoes, in Class No. 39, Clothing. 

(Particular description of goods.) (Number and title of class. — See classification.* 

The trade-mark has been continuously used in my business (and in 
the business of my predecessor, John W. Brown) since January 1, 1901. 

(Nameof predecessor, if any.) (Earliest date of use.) 

The trade-mark is applied or affixed to the goods, or to the packages 
containing the same, by placing thereon a printed label on which the 

(Or state other mode or modes of 

tirade-mark is shown. 

application.) 

KicHARD Roe. 

(Signature of applicant.) 

Declaration. 
United States Consulate, ) 
London, England. r^'' 

Richard Roe, being duly sworn, deposes and says that he is the ap- 

(Name of aftiant.) 

plicant named in the foregoing statement; that he believes the foregoing 
statement is true; that he believes himself to be the owner of the trade- 
mark sought to be registered; that no other person, firm, corporation, or 
association, to the best of his knowledge and belief, has the right to use 
said trade-mark in the United States, either in the identical form or in 
any such near resemblance thereto as might be calculated to deceive; that 
said trade-mark is used by him in commerce among the several States of 
the United States (and between the United States and foreign nations or 
Indian tribes, and particularly with England and Germany^) ; that the 

(Names of foreign •countries or Indian tribes. > 

description and drawing presented truly represent the trade-mark sought 
to be registered ; that the specimens show the trade-mark as actually used 

(Or facsimiles.) 

upon the goods; that his manufacturing establishment is located at UarU 

(Location of 

ford, state of Connecticut; and that the goods for which tlie trade-ninrk 

manufacturing ostabli.shmont.) 

is claimed in this application are the products of such establishment. 

Kicii.vun 1\()K. 

(Slgiiaturo of amant.> 

Subscribed and sworn to before inc. a I iiihd States consul, this 
mth day of June, 1906. 

(Date ofr.xecullon.) RiCUAUD JONKS. 

[seal.] Cnilt'd States Consul. 

( Official title.) 

(a) In case njtpHcant be a firm, coj-poration. <m- a.Msortallon. the applioHtion 
should ])o mn(]\\\o^\ a<'cordlnKly. 

(b) If appllcMiit i\oo» not have coninuMcc with loielnu nations or Indian tribes 
this clause aiujuhl be (»mltted. 

.SO 



((]) NOTICK OF ()I'IM)S|'1I()\. 
Tu the (nnnnissiuner of Paicuts: 

In tlie inatttT of an application for the ngistration of a trade-mark 
for sewinij machines. Serial No. lifua, filed April 15, 19UG, by John Doe, 

(Fiuticulnr Koods. ) (Number an«l date of appUeatiun.) (Name of applicant.) 

of San Francisco, ('<//.. which was published on page 17JfO, A'ol. U(), No. 
( Locution or ro.sKlence ot applicant.) (Page, volume, number and date 

Id, of the Olliiial (iazette of June IS, lUUO, 1, Richard Roe, residiny at 
of the Omcial Gazette.) (Name of party opposing.) 

lOS Rue Jouberl, Citij of Paris, France, hclitve 1 would he damaged by 

(lUsidiiice or lolallun of party opposing.) 

such registration and 1 hereby give notice of my intention to oppose the 
registration of said trade-mark. 

The grounds for opposition arc as follows: 

(Here .st.'ite the grounds for oppo.sini; rt-gistratlon.) 

Richard Roe. 

(Signature of opposing party.) 

United States Consulate, ) 
Paris, France. \ " ' 

On this JSd dav of June, Vjatj, before me, a United States Consul, per- 

(Date of execution.) ' (Official title.) 

sonally appeared Richard Roe, who, being by me duly sworn, deposes and 

(Name of party opposing. ) '' iOv affirmed.) 

says that he has read the foregoing notice of opposition, and knows the eon- 
tents thereof, and that the same is true of his own knowledge, except as 
to the matters therein stated on iiiformation and belief, and as to those 
matters he believes it to be true. Charles Brown^ 

United States Consul. 

(Official title.) 

(7) ArrhicArioN j-ok ( an( kllatiox of trade-mark. 

7'c» the Conunissioner of Patents: 

In the matter of trade-mark* Xo. 1S9S, registered Maij 23, 19UG, by 

(Numbor of registration.) (Date of registration.) 

Richard Roe, of the city of Portland, county of Cumberland, State of 

(Name of registrant.) ( Rt-sitlence or location of registrant.) 

Maine, 1, John Doe, resi^ling at KfO Rupert street, London, England, deem 

(Nam*' of party applying for cancellation.) (Residence or location of the party 

myself injured by said registration and 1 hereby apply for the cancellation 

applying for cancellation.) 
thereof. 

The grounds for eaneellation are as follows: John Doe. 

(Here state the grounds for cancellation.) (Signature of party applying for 

cancellation.) 

United States Consulate, ) 

London, England. \ 

On this 20th day of Jvne, Vj(n], before me, a United States Consul, per- 

(Date of 'execution.) (Official title.) 

sonally a})peared John Doe. who, being by me duly sworn, deposes and says 

(Name of party applying for laiicllat ion. ) * (Or affirmed.) 

that he has read tlic foregoing application for cancellation, and knows the 
contents thereof, and that the same is true of his own knowledge, except 
as to the matters therein stated on information and belief, and as to those 
matters he believes it to be true. JoHN" JoNES, 

[l. s.] United States Consul. 

(Official title.) 
40 



Berthold Singer 
E. Albert Singer 



Patents and Tkade-Mauks 
B. SINGER 

Security Building", Chicago 
30 Churcli Street, New York 
Victor Building, Washington 
Neuenburger Strasse 17, Berlin 



Alexander Singer 
M. H. Ehlert 



Bertsinger Chicago, New York or Washington 
Singerbert Berlin 



PATENTS, TRADE-MARKS, DESIGNS AND COPYRIGHTS 



BUSINESS TRANSACTED EXCLUSIVELY FOR PATENT 
ATTORNEYS. NO BUSINESS ACCEPTED FROM IN- 
VENTORS OR MANUFACTURERS DIRECT. 



AGENTS AND CORRESPONDENTS IN EVERY COUN- 
TRY GRANTING PATENTS, TRADE-MARKS. DESIGNS 
OR COPYRIGHT PROTECTION. 



B. SINGER 

Author of the following works: 
"PATENTS, TBADE-MARKS, DESIGNS AND COPYRIGHTS" 

Vol. I, Containing 576 pages. 
Price (bound) $2.50. 

"COPYRIGHT I.AWS OP THE WORI.D" 

Containing I.^ws, Rules, and Regulations for Copyriglits of the 
Entire World. Price (bound) $2.00. 

"PATENT AND TRADE-MARK Z.AWS OF THE WORX.D" 

March, 1911 

The book contains 540 pages, and the first five thousand 

volumes will be sold to the profession at the actual 

cost — $1.75 a volume, bound in buckram. 

and delivered. 



41 



W)S w w^^ 



One copy del. to Cat. Div. 



AUG n WM 



